For our weekly SoCal IP Institute meeting on Monday, April 27th, 2020 we will discuss the following cases:

Romag Fasteners, Inc. v. Fossil Group, Inc. (US 2020)(available here)

Romag Fasteners and Fossil entered an agreement to use Romag’s fasteners in Fossil’s leather products. Romag discovered that factories in China making Fossil products were using counterfeit Romag fasteners. Romag sued Fossil for trademark infringement pursuant to 15 U. S. C. §1125(a). The district court rejected Romag’s request for an award of profits, because the jury, while finding that Fossil had acted callously, rejected Romag’s theory that Fossil acted willfully. The Supreme Court disagreed finding plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.

Thryv, Inc. v. Click-to-Call Tech (US 2020)(available here)

Parties associated with petitioner Thryv, Inc. sought inter partes review of a patent owned by Click-to-Call Technologies, LP. Click-to-Call asserted that the petition was untimely under §315(b). The Patent Trial and Appeal Board disagreed and instituted review. The PTAB issued a final written decision reiterating its §315(b) decision and canceling 13 of the patent’s claims as obvious or lacking novelty. Click-to-Call appealed the Board’s §315(b) determination. Treating the Board’s application of §315(b) as judicially reviewable, the Court of Appeals concluded that the petition was untimely, vacated the Board’s decision, and remanded with instructions to dismiss. The Supreme Court disagreed with the entire analysis and found Section 314(d) precludes judicial review of the agency’s application of §315(b)’s time prescription.

All are invited to attend. Due to the Covid-19 situation the meeting will be conducted electronically via zoom. Join us by using this link. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.